DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-20 are pending in the current application.
Claims 1, 2, 5, 6, 8, 9, 11, and 14-20 are amended in the current application.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “R10’, R11, and R11’ are each independently selected from the group consisting of hydrogen or and alkyl group.” This recitation appears to contain a typographical error, and should instead be amended to recite “R10’, R11, and R11’ are each independently selected from the group consisting of hydrogen an alkyl group.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 depicts the variable R10. However, this variable is not defined by the claim and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what chemical groups are included within the undefined scope of R10. Claim 1 recites “R10’, R11, and R11’ are each independently selected from the group consisting of hydrogen or and alkyl group.” The specification as originally filed at [0049] recites “R10, R10’, R11, and R11’ are each independently selected from the group consisting of hydrogen and an alkyl group. For the purposes of examination, the claim is interpreted as instead reciting “R10, R10’, R11, and R11’ are each independently selected from the group consisting of hydrogen an alkyl group.”
Claims 4 and 18 recite the limitation "measured by rotational viscometry (as described below with the test methods)." There is insufficient antecedent basis for “the test methods” and there is no recitation of any viscometry test methods in the claims. Therefore, it is unclear if the scope of these claims requires a specific viscometry test method. For the purposes of examination, these claims do not require a specific viscometry test method, and are interpreted as instead reciting “measured by rotational viscometry
Claim 18 recites the limitation “selected from the group consisting of: i) a cyclic carboxy-functional polyorganosiloxane having a unit formula selected from the group consisting of (R4RCarSiO2/2)d, where subscript d is 3 to 12; (R42RCarSiO2/2)c(R4RCarSiO2/2)d, where c is > 0 to 6 and d is 3 to 12; ....” There is no article present at the end of this imbedded Markush group of i). Therefore, it is unclear if both (R4RCarSiO2/2)d and (R42RCarSiO2/2)c(R4RCarSiO2/2)d are required to satisfy the scope of i). Claim 18 follows the same structure of claim 4, where claim 4 recites “selected from the group consisting of: i) a cyclic aldehyde-functional polyorganosiloxane having a unit formula selected from the group consisting of (R4RAldSiO2/2)d, where subscript d is 3 to 12; (R42RAldSiO2/2)c(R4RAldSiO2/2)d, where c is > 0 to 6 and d is 3 to 12; and a combination thereof; ....” For the purposes of examination, the claim is interpreted as instead reciting “selected from the group consisting of: i) a cyclic carboxy-functional polyorganosiloxane having a unit formula selected from the group consisting of (R4RCarSiO2/2)d, where subscript d is 3 to 12; (R42RCarSiO2/2)c(R4RCarSiO2/2)d, where c is > 0 to 6 and d is 3 to 12; and a combination thereof; ....”
Claim 18 recites the limitation “selected from the group consisting of: i) …; ii) …; iii) …; iv) …; and … v); and vi) …. ” There appears to be an indented component “a branched carboxy-functional polyorganosiloxane” of the aforementioned Markush group that should be denoted by its own numeration (such as “v)”). However, the “branched carboxy-functional polyorganosiloxane” does not have its own numeration and does not follow the Markush group structure. Therefore, it is unclear if “a branched carboxy-functional polyorganosiloxane” is its own component or is a sub-component of the preceding numeration of “iv)”. Claim 18 follows the same structure of claim 4, where claim 4 recites “selected from the group consisting of: i) …; ii) …; iii) …; iv) …; v) a branched aldehyde-functional polyorganosiloxane …; vi) …; and vii) ….” For the purposes of examination, the claim is interpreted as instead reciting “i) …; ii) …; iii) …; iv) …; v) a branched carboxy-functional polyorganosiloxane …; vi) …; and vii) ….”
Claims 2, 3, 5-17, 19, and 20 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
Allowable Subject Matter
Claim 1 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in this Office action.
Claims 2-20 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Distinctions between the instant claims and closest prior art of record are below:
Ochs et al. (US 2009/0221842 A1) teaches organosilicon compounds bearing carboxylic acid group formed by a process of oxidation of a carbinol-functional organosilicon compound with an oxidizer in the presence of a moderator (Ochs, Abstract, [0001]-[0029], [0044]-[0096]). Ochs fails to teach a process for preparing a carboxy-functional organosilicon compound comprising forming an aldehyde-functional organosilicon according to steps (A), (B), and (C) with a rhodium/bisphosphate ligand complex catalyst as set forth by claim 1; and fails to teach a step I) of combining and conducting an oxidation reaction of the aldehyde-functional organosilicon and an oxygen source.
Burkhard et al. (US 2588083) teaches a method of preparing organosilicon aldehydes (Burkhard, Cols 1-6). Burkhard fails to teach a process for preparing a carboxy-functional organosilicon compound comprising forming an aldehyde-functional organosilicon according to steps (A), (B), and (C) with a rhodium/bisphosphate ligand complex catalyst as set forth by claim 1; and fails to teach a step I) of combining and conducting an oxidation reaction of the aldehyde-functional organosilicon and an oxygen source.
Dyballa et al. (US 2017/0275316 A1) teaches bisphosphate ligand complexes for hydroformylation reactions (Dyballa, Abstract, [0008]-[00]). Dyballa fails to teach a process for preparing a carboxy-functional organosilicon compound comprising forming an aldehyde-functional organosilicon according to steps (A), (B), and (C) with a rhodium/bisphosphate ligand complex catalyst as set forth by claim 1; and fails to teach a step I) of combining and conducting an oxidation reaction of the aldehyde-functional organosilicon and an oxygen source.
The prior art of record, whether taken alone or in combination, does not disclose or render obvious the claimed invention. In view of the foregoing, the instant claims are considered to contain allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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